Appeal No. 2001-0942 Page 11
Application No. 08/473,960
although the source of the free radicals is a chemical one and not ionizing radiation.
Bose discloses using ultraviolet radiation to generate oxygen-derived free radicals.
Example 6 of the specification indicates that free radical generation by ionizing radiation
is expected to cause damage to tissues.
Based on the combination of these disclosures, examiner concludes that the “prior art
teaches that OXANO is capable of scavenging oxygen-derive free radicals, … [and that]
[o]ne of ordinary skill in the art would reasonably expect OXANO to do this regardless
of the way the free radicals were generated [i.e., by ionizing radiation]” (Paper No. 23,
p. 6).
We disagree.
A critical step in the method of instant claim 17 is administering a compound,
such as OXANO, “to [a] mammal, after exposure to ionizing radiation.” This is nowhere
taught or suggested in any of the cited references. Samuni fails even to teach
administering the compound to a mammal or exposing a mammal with ionizing
radiation. Nilsson (I or II) fails to mention ionizing radiation. Bose teaches UV radiation
which appellants urge and examiner does not dispute is not an ionizing radiation. And
the admitted prior art fails to teach or suggest administering any of the claimed
compounds. To reach the conclusion that the prior art combination would render
obvious this critical step, examiner has had to make a selective combination of the prior
art references; that is, examiner has looked namely to Nilsson (I or II) to teach
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